Densys LTD.

Patent Trials and Appeals Board

May 20, 2021

IPR2021-00236 (P.T.A.B. May. 20, 2021)

Trials@uspto.gov Paper No. 12
571-272-7822 Date: May 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

3SHAPE TRIOS A/S and 3SHAPE A/S,
Petitioner,
v.
DENSYS LTD.,
Patent Owner.
____________

IPR2021-00236
Patent 6,402,707 B1
____________

Before LYNNE H. BROWNE, ULRIKE W. JENKS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

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I. INTRODUCTION
3Shape Trios A/S, 3Shape A/S, 3Shape Inc., 3Shape Holding A/S,
and 3Shape Poland sp. z.o.o. (“Petitioner”) filed a Petition requesting an
inter partes review of claims 1, 2, 16, 18, 19, 21–24, 32, 34–38, 52, 54, 55,
57, 59, 60, and 63–68 (“the challenged claims”) of U.S. Patent No.
6,402,707 B1 (Ex. 1001, “the ’707 patent”). Paper 3 (“Pet.”). Densys Ltd.
(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 7
(“Prelim. Resp.”). With our prior authorization, Petitioner filed a Reply.
Paper 9 (“Reply”); Ex. 3001. Also, with our prior authorization, Patent
Owner filed a Sur-reply. Paper 11 (“Sur-reply”); Ex. 3001.
Having considered the arguments and evidence of record, and for the
reasons explained below, we exercise our discretion under 35 U.S.C.
§ 314(a) and deny institution of inter partes review.
A. Related Proceedings
The parties identify the following matter in which the ’707 patent has
been asserted: Densys Ltd. v. 3Shape Trios A/S et al., Civil Action No. 6:19-
cv-00680 (W.D. Tex.). Pet. 2; Paper 5, 2.
B. The ’707 Patent (Ex. 1001)
The ’707 patent is titled “Method and System for Real Time Intra-
orally Acquiring and Registering Three-dimensional Measurements and
Images of Intra-oral Objects and Features.” Ex. 1001, (54). The ’707 patent
issued from Application No. 09/605,679 (“the ’679 application”), filed
June 28, 2000. Id. at (21), (22).
The ’707 patent relates to non-x-ray based imaging with the main
benefit to obtain highly accurate and precise realistic measurements, images,
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and spatial maps of intra-oral objects and features such as teeth, gum, intra-
oral soft tissue, bone matter, dental undercuts, dental fixtures, and prostheses
of any kind. See id. at 1:15–30, 9:5–8. The ’707 patent describes using an
intra-oral fixed global registration position inside the oral cavity of the
dental patient for acquiring and recording the global position of the imaging
device relative to the intra-oral fixed global registration position for forming
a globally recorded three-dimensional measurement and image of the intra-
oral objects. See id. at 9:13–32. The ’707 patent explains that by using the
same intra-oral fixed global registration position the three-dimensional
measurement and imaging data can be merged more efficiently by “at least
minimizing, propagation errors related to the piecing and merging” of
information to obtain panoramic measurements and images. Id. at 10:22–24.
C. Illustrative Claim
Claims 1 and 37 are the independent claims challenged by Petitioner
in this proceeding. Independent claim 1 of the ’707 patent is illustrative and
reproduced below:
1. A method for real time intra-orally acquiring and
registering three-dimensional measurements and images
of intra-oral objects and features, the intra-oral objects
and features are located inside the oral cavity of a dental
patient, comprising the steps of:
(a) establishing an intra-oral fixed global
registration position inside the oral cavity of the
dental patient, said intra-oral fixed global registration
position is definable in terms of global coordinate
space of the oral cavity, said global coordinate space
is associated with a fixed global reference coordinate
system, said global coordinate space includes a
plurality of intra-oral local coordinate spaces in the
oral cavity;
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(b) providing a measuring and imaging device
for measuring and imaging the intra-oral objects and
features located in the oral cavity;
(c) selecting a field of view of said measuring
and imaging device located at a global position in said
global coordinate space of the oral cavity;
(d) acquiring at least one three-dimensional
measurement and image of the intra-oral objects and
features located in said selected field of view of said
measuring and imaging device, and, recording said
global position of said measuring and imaging device
relative to said intra-oral fixed global registration
position, for forming at least one globally recorded
three-dimensional measurement and image of the
intra-oral objects and features located in the oral
cavity;
(e) repeating step (c) and step (d) for a plurality
of said global positions and a plurality of said fields of
view of said measuring and imaging device, for
forming a plurality of said globally recorded three-
dimensional measurements and images of the intra-
oral objects and features located in the oral cavity of
the dental patient; and
(f) registering local coordinate space pixel
positions in each of said plurality of globally recorded
three dimensional measurements and images with
corresponding global coordinate space pixel positions,
for forming a plurality of the three-dimensional
measurements and images of the intra-oral objects and
features located in the oral cavity of the dental patient
which are registered relative to same said intra-oral
fixed global registration position.
Ex. 1001, 24:30–25:7. Claim 37, the only other independent claim, is
directed to a system for acquiring intra-oral three-dimensional measurements
and images in real-time. Id. at 29:39–59.
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D. Prior Art and Asserted Ground
Petitioner asserts that claims 1, 2, 16, 18, 19, 21–24, 32, 34–38, 52,
54, 55, 57, 59, 60, and 63–68 are unpatentable based on the following
ground.
Claims challenged 35 U.S.C. § References/Basis
1, 2, 16, 18, 19, 21–24,
32, 34–38, 52, 54, 55,
57, 59, 60, 63–68
103 Rubbert,1 Fright2
Petitioner also relies upon the declaration of Parris Egbert, Ph.D.
(Ex. 1003) to support its contentions.
II. ANALYSIS
Patent Owner urges the Board to exercise discretion to deny
institution of inter partes review under 35 U.S.C. § 314(a) because of the
advanced state of a parallel litigation pending in a district court. Prelim.
Resp. 1. Specifically, Patent Owner asserts that a complaint involving
the’707 patent was asserted over 15 months ago. “In that case, final
infringement and invalidity contentions have already been exchanged, claim
construction briefs have been submitted, a Markman hearing was held on
August 31, 2020 and a final claim construction order was issued, and a jury
trial has been set.”3 Id. (citation omitted).“Given the current posture and

1 WO 98/10243 published March 12, 1998. Ex. 1005. An English translation
of WO 98/10243 is provided (Ex. 1006) and relied upon throughout the
Petition.
2 WO 96/10205 published April 4, 1996. Ex. 1007.
3 The trial date was set for June 21, 2021 but has now been postponed to
October 12, 2021. See Ex. 1020; Ex. 1021; Ex. 2008.
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schedule of the underlying District Court Litigation,” Patent Owner urges us
to deny institution. Id. at 1–2 (citing Apple Inc. v. Fintiv, Inc., IPR2020-
00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner
disagrees. Pet. 68–70; Reply 1–3.
A. Legal Standards
35 U.S.C. § 314(a) states that
[t]he Director may not authorize an inter partes review to be
instituted unless the Director determines that the information
presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
This language of section 314(a) provides the Director with discretion
to deny institution of a petition. See Cuozzo Speed Techs., LLC v. Lee, 136
S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
matter committed to the Patent Office’s discretion.”); Consolidated Trial
Practice Guide November 2019 (“TPG”)4 at 55.
In exercising the Director’s discretion under 35 U.S.C. § 314(a), the
Board may consider “events in other proceedings related to the same patent,
either at the Office, in district courts, or the ITC.” TPG at 58. The Board’s
precedential NHK Spring decision explains that the Board may consider the
advanced state of a related district court proceeding, among other
considerations, as a “factor that weighs in favor of denying the Petition
under § 314(a).” NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-
00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).

4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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The Board’s precedential Fintiv decision identifies several factors that
balance considerations of system efficiency, fairness, and patent quality
when a patent owner raises an argument for discretionary denial due to the
advanced state of a parallel proceeding, such as the related litigation here.
Fintiv, Paper 11 at 5–6. These factors are:
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the
parties;
4. overlap between issues raised in the petition and in the parallel
proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Id.
We now consider these factors to assess whether we should exercise
discretion to deny institution under 35 U.S.C. § 314(a). “[I]n evaluating the
factors, the Board takes a holistic view of whether efficiency and integrity of
the system are best served by denying or instituting review.” Id. at 6.
B. Fintiv Factors
In determining whether to institute trial in this proceeding, we
consider each of the factors set forth in Fintiv below.
Factor 1: whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted
Petitioner asserts that they “anticipate requesting a stay of the Related
Litigation pending this IPR.” Pet. 69. Patent Owner asserts that Petitioner
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“has not asked for a stay pending inter partes review, and there is no
evidence that Judge Albright would grant a stay even if an IPR were
instituted.” Prelim Resp. 5 (citing Ex. 2003). We agree with Patent Owner
that analysis of this factor requires speculation. As such, we determine that
the facts underlying this factor are neutral.
Factor 2: proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision
Patent Owner asserts that the district court trial is set to “commence
on October 12, 2021, i.e. approximately 8 months before the Board’s
projected statutory deadline for a final written decision.” Sur-reply 1
(emphasis omitted); see Prelim Resp. 8.
Petitioner contends that the October trial date is uncertain and
speculative. Reply 3 (citing Ex. 1021, 1). Petitioner contends that “the
District Court granted a joint request by the parties to postpone trial for 120
days.” Reply 2 (citing Ex. 1020). Patent Owner responds that “the
correspondence with the District Court is clear that the sole purpose of the
extension relates to Petitioners’ preference to not have their witnesses appear
by remote video link.” Sur-reply 1 (citing Ex. 1020). Patent Owner asserts
that it is clear that “Petitioner’s trial counsel is relying on the scheduled
October 12, 2021 trial date in proposing deadlines over the next few months
for the upcoming trial-related dates in the case.” Sur-reply 3 (citing Ex.
2008).
On the record before us, both parties are proceeding as if trial will
begin in October and would thereby conclude at least seven months before a
final written decision in this proceeding would be due. See Ex. 2008, 1;
Ex. 1021, 1. We understand that Petitioner’s fact witnesses and corporate
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representatives who reside in Denmark wish to participate in the district
court proceedings in person. Ex. 1020. The uncertainty surrounding current
international COVID-19 restrictions and the lack of guidance when these
restrictions may be lifted raises doubt whether the trial will commence in
October as currently scheduled. As such, we determine that the facts
underlying this factor are neutral.
Factor 3: investment in the parallel proceeding by the court and the
parties
Patent Owner asserts that significant investment has been made in the
district court proceedings and that the trial is set to start on October, 12,
2021, which is approximately eight months before the Board’s projected
statutory deadline. Sur-reply 1; see Prelim Resp. 11.
Petitioner asserts that the Board has declined to exercise discretion to
deny institution even when significant investment has been made in related
litigation. Pet. 68.
Patent Owner explains that claim construction briefing and arguments
are complete, and that the District Court held a Markman hearing on August
31, 2020 and issued a final claim construction order. Prelim Resp. 1, see also
id. at 11 (citing Fintiv, Paper 11 at 14, and Google LLC, v. Uniloc 2017,
IPR2020-00115, Paper 8 at 7 (PTAB Mar. 27, 2020)). In addition, Patent
Owner asserts that fact discovery and expert discovery are now also
complete. Sur-reply 3; see Prelim Resp. 9–11.
Patent Owner further contends that Petitioner’s delayed filing of the
Petition contributed to the parties’ significant investment in the district court
litigation. See Prelim. Resp. 9–12.
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We agree with Patent Owner. As Patent Owner has identified, the
District Court has held a Markman hearing, issued a final claim construction
order, and fact and expert discovery is complete. Prelim. Resp. 1, 9–11; Sur-
reply 3. Furthermore, Patent Owner served Petitioner with its preliminary
disclosure of asserted claims and infringement contentions on March 19,
2020. Ex. 2002, 1. Petitioner filed its Petition in this proceeding
approximately eight months later, on November 25, 2020, before filing its
invalidity contentions in the district court on December 18, 2020. Pet. 72;
Prelim Resp. 1; Ex. 2002, 3. Accordingly, the substantial investment in the
parallel District Court weighs in favor of exercising discretion to deny
institution of inter partes review and Petitioner has not presented evidence
of diligence in filing its Petition. 5
On the record before us, in light of the advanced state of the district
court proceeding, and the investment by the court and parties, and
Petitioner’s failure to provide evidence of diligence in filing the Petition, we
determine that this factor weighs in favor of exercising our discretion to
deny institution.
Factor 4: overlap between issues raised in the petition and in the
parallel proceeding
Patent Owner asserts that Petitioner’s “IPR Petition alleges invalidity
of the exact same claims asserted in the District Court litigation based on the

5 Petitioner alerted the panel of a recent Board decision: Facebook, Inc. v.
USC IP Partnership, L.P., IPR2021-00033, Paper 13 at 13 (PTAB Apr. 30,
2021). We agree with Patent Owner’s position that Facebook has not
changed the law and therefore denied further briefing. See Ex. 3002.
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identical combination of two references that it has relied on in the District
Court litigation.” Prelim. Resp. 12 (citing Ex. 2005).
Petitioner does not deny that there is overlap. In the Petition, however,
Petitioner stipulates that “if the IPR is instituted, Petitioner[] will not pursue
the same ground presented in this Petition in the Related Litigation.” Pet. 69
(citing Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC,
IPR2019-01393, Paper 24 at 11-12 (PTAB June 16, 2020) (informative)
(“Sand Revolution”)). Patent Owner asserts that Petitioner’s stipulation is
insufficient because it only limits Petitioner “from pursuing ‘the same
ground presented in [the] Petition in the Related Litigation.’” Prelim. Resp.
15 (citing Pet. 69). In the related district court litigation, Petitioner asserts
Rubbert and Fright alone or in further combination with any one of 39 other
references renders the claims of the ’707 patent obvious. See Ex. 2005,6 4
(“[T]o the extent that Rubbert and Fright does not disclose a particular
limitation of the claims, it would have been obvious to combine the
teachings of Rubbert and Fright with (1) the knowledge of a person of
ordinary skill in the art and/or (2) any of the prior art references identified
above to show each and every limitation of the asserted claims.”). Patent
Owner asserts that the stipulation “has failed to avoid using any grounds that
are ‘raised or could have been reasonably raised in an IPR’ in its
stipulation.” Prelim Resp. 15 (emphasis omitted) (citing Google v. AGIS
Software Dev., LLC, IPR2020-00871, Paper 16 at 15 (PTAB Nov. 25,
2020)). Based on Petitioner’s invalidity disclosures, we agree with Patent

6 See Prelim Resp. iv (Ex. 2005: Appendix A-10 to 3Shape’s Final Invalidity
Contentions filed in Densys Ltd. v. 3Shape Trios A/S and 3Shape A/S, No.
6:19-cv-00680-ADA).
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Owner that Petitioner’s stipulation is too narrow to clarify that it will not
pursue any ground that could have reasonably been raised in an IPR. A
broader stipulation might better address concerns regarding duplicative
efforts and potentially conflicting decisions. Nevertheless, Petitioner’s
stipulation does minimize the overlap between this proceeding and the
litigation to some extent. Sand Revolution, IPR2019-01393, Paper 24 at 11–
12. Thus, this factor marginally weighs against denying institution.
Factor 5: whether the petitioner and the defendant in the parallel
proceeding are the same party
Patent Owner asserts that “3Shape is both the petitioner here and the
defendant in the District Court Litigation.” Prelim. Resp. 16; Ex. 2001.
Petitioner does not provide a response with respect to this factor.
On the record before us, we determine that Petitioner here is the
defendant in the parallel proceeding, which when viewed in the context of
the other facts in this case, weighs in favor of denying institution.
Factor 6: other circumstances that impact the Board’s exercise of
discretion, including the merits
Patent Owner asserts that institution would “give rise to substantial
duplication of efforts. As noted above, it will not prevent fact discovery,
expert discovery, and other disputes that occur in the District Court
Litigation, nor obviate dispositive motions, pre-trial motions, or a trial.”
Prelim. Resp. 17. Petitioner contends that “the challenged claims of the ’707
Patent were allowed without any prior art rejection or any meaningful prior
art analysis,” and that Rubbert and Fright were not considered during
prosecution. Pet. 69. Petitioner assert that “[g]iven the strength of this
Petition’s merits, this factor weighs in favor of institution.” Id.
We determine that the facts underlying this factor are neutral.
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C. Holistic Analysis of Fintiv Factors
We undertake a holistic analysis of these factors, considering
“whether efficiency and integrity of the system are best served by denying or
instituting review.” Fintiv, Paper 11 at 6. In this case, the factors weighing in
Patent Owner’s favor of exercising our discretion to deny institution
outweigh facts that may support institution.
A balancing of the facts and circumstances as discussed above leads
us to conclude, on this record, that the inefficient duplication of efforts here
is likely. Accordingly, we determine that the circumstances presented weigh
in favor of denying institution under 35 U.S.C. § 314(a).
III. CONCLUSION
Taking account of the information presented in the Petition, the
Preliminary Response, the Reply, the Sur-reply, and the evidence of record,
we exercise our discretion under 35 U.S.C. § 314(a) and deny institution.
We, therefore, do not institute an inter partes review.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.
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For PETITIONER:
Todd Walters
Roger Lee
Adam Banes
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
roger.lee@bipc.com
adam.banes@bipc.com

For PATENT OWNER:
Oded Burger
Chandran Iyer
DAIGNAULT IYER LLP
oburger@daignaultiyer.com
cbiyer@daignaultiyer.com